CANTARELLA BROS PTY LTD V ESPRESSO ENTERPRISES PTY LTD [2014] ATMO 68

Cantarella Bros allege bad faith on the part of Espresso Enterprises in its applications to register:

Di Bella Coffee ... we know coffee; and

Crop to Cup ... we know coffee

Both of the applications cover coffee goods in Class 30, coffee roasting services in class 40 and café services in Class 43.

Cantarella led evidence of its extensive use and reputation in relation to the tag line ‘WE KNOW COFFEE’. This evidence included references by Di Bella on its own Facebook page to Cantarella’s ‘WE KNOW COFFEE’ advertisements featuring Al Pacino – certain evidence that the applicant was aware of the opponent’s use of the tag line ‘WE KNOW COFFEE’.

The Hearing Officer, after considering the relevant case law, noted that ‘the [a]pplicant’s actions before and around the Priority Date…cast significant doubt on its intentions in filing the Applications’, that the parties are direct business rivals, that Di Bella commenced using the tag line shortly after making a complaint to the ACCC about Cantarella’s actions (the ACCC did not find that Cantarella had a case to answer) and that Di Bella did not deny it used the tag line because Cantarella had already been using it.

This led to the Hearing Officer’s conclusion that Di Bella’s actions fell short of the standards of acceptable commercial behaviour and that whilst it was one thing to imitate another traders advertising campaigns, ‘it is quite another to seek to acquire registered rights in trade marks which feature the very tag line prominently used in that advertising’.

Cantarella successfully made it case under section 62A and the Di Bella applications were denied registration.

To view the Office decision, click here.